Tuesday, October 20, 2009

According to a report in the Wall Street Journal, the U.S. Patent and Trademark Office is going to scrap rules that the Bush Administration put in place to limit the flood of patents that companies could file. The idea was that fewer patents would speed up the approval and denial process at USPTO. With over 700,000 patent filings in backlog and a $200 million budget shortfall for the Federal fiscal year that started in October, something has to change. The bigger the backlog, the messier the tangle is to decide who invented something first. Hence, the first-to-file provision is still in the Senate bill, which has plenty of inventors up in arms. Now it is not just a race to invent, but a race to do paperwork. And in that case, the bigger companies have the advantages.

The punchline: But if healthcare runs off the rails, the Senate will turn to patent reform so fast it might snap our necks if we are watching.

The logic problems:

The prior rules on continuing applications would have impacted fewer than 5% of all patent applications, a marginal impact on backlog.

As to "first to invent" vs. "first to file", interference cases are a fraction of all applications.

Neither the rules nor "first to file" are tightly linked to the backlog problem.

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About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.